Ex Parte Sjoberg et al

Board of Patent Appeals and Interferences

Jun 14, 2010

11129497 (B.P.A.I. Jun. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKE SJOBERG and ANN-CHARLOTT JOHANSSON
____________

Appeal 2010-000263
Application 11/129,497
Technology Center 1700
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Decided: June 14, 2010
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2010-000263
Application 11/129,497

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, 5-7, and 9-25.
Claim 1 is illustrative:
1. A process for the manufacturing of a decorative laminate,
which laminate comprises an upper decorative and abrasion resistant
thermosetting laminate layer and a carrying core, wherein the carrying core
is constituted by particle board or fibre board, the upper side of the core is
provided with the abrasion resistant thermosetting laminate and with a
dampening foil of a thermoplastic elastomer arranged between the upper
side of the core and the abrasion resistant thermosetting laminate, which
elastomer and which thermosetting laminate are joined with each other and
with the core by means of pressing.

The Examiner relies upon the following references as evidence of
obviousness:
Lindgren EP 329154 Aug. 23, 1989
Baba JP 01310058 Dec. 14, 1989
Meyers 2,680,700 Jun. 8, 1954
US S/N 10/722,575
Jinno JP 200169646 Jun. 20, 2000
Ekstrand SE 506960 Mar. 9, 1998
Isaacson 3,551,283 Dec. 29, 1970
Kadokura JP 53059756 May 29, 1978

American Heritage Dictionary definition of elastomer 2000

Appellants’ claimed invention is directed to a process for making a
decorative laminate. The laminate comprises an upper decorative and
abrasion resistant thermosetting layer and a carrying core of particle board or
fiber board. A dampening foil of a thermoplastic elastomer is arranged
between the upper decorative layer and the core.

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Application 11/129,497

The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 2, 5, 7, 10, 12, 15-17, 20, 23 and 25 over Lindgren in
view of JP’058,
(b) claim 6, 14, 18 and 22 over Lindgren in view of JP’058 and
Meyers,
(c) claims 9, 19 and 24 over Lindgren in view of JP’058 and Jinno,
(d) claims 11 and 21 over Lindgren in view of JP’058 and Ekstrand,
and
(e) claim 13 over Lindgren in view of JP’058 and Isaacson.

In addition, claims 1, 2, 5-7 and 9-23 stand provisionally rejected on the
ground of non statutory obviousness-type double patenting over the claims
of US S/N 10/722,575. Claims 24 and 25 are also provisionally rejected on
the ground of non statutory obviousness-type double patenting over the
claims of US S/N 10/722,575 in view of Jinno, and Lindgren, respectively.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we are in complete agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s § 103 rejections for essentially
those reasons expressed in the Answer, and we add the following primarily
for emphasis. In addition, since Appellants have not presented a substantive
argument against the double patenting rejections, we will also sustain these
rejections.
Appellants do not dispute the Examiner’s factual determination that
Lindgren, like Appellants, discloses a process for making a decorative
laminate, such as floor material, comprising an upper decorative and
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abrasion resistant thermosetting laminate layer and a core comprising
particle board or fiber board, wherein the upper decorative layer and the core
are joined by pressing. As recognized by the Examiner, Lindgren does not
disclose the use of a dampening foil of a thermoplastic elastomer between
the decorative layer and the core. However, as set forth by the Examiner,
JP’058 discloses a pressure-resistant composite floor material wherein a
cushioning, or dampening, member 4 comprising rubber, foam or ethylene
foam material is placed between a base core 1 and a decorative laminate 2
(see fig. 2). Accordingly, we fully concur with the Examiner that it would
have been obvious for one of ordinary skill in the art to employ a cushioning
or dampening foil of the type disclosed by JP’058 in the flooring laminate of
Lindgren.
Appellants maintain that JP’058 “departed from the use of an upper
surface of wood which is either covered, or impregnated, with a synthetic
resin and instead provided an upper decorative surface of a non-abrasion
resistant material such as a wood veneer, see the 1st and 2nd paragraph of
page 3 of the English language translation” (Rep. Br. 2, 4th para.). However,
our review of the cited paragraphs of the English translation find no
description of the veneer sheet as non-abrasion resistant. In any event, the
conclusion of obviousness is not based upon the veneer sheet of JP’058
being abrasion resistant. Rather, JP’058 evidences the obviousness of
incorporating a cushioning or dampening foil in the flooring material
laminate of Lindgren.
We are also not persuaded by Appellants’ argument that the core of
JP’058 is plywood or gluam rather than the claimed particle board or fiber
board. The Examiner has cited Lindgren for a core of particle board or fiber
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Application 11/129,497

board and Appellants have presented no argument why it would have been
nonobvious to include a dampening or cushioning foil in the flooring
laminate of Lindgren.
Appellants also contend that there is no teaching in JP’058 that “the
“ethylene foam material” of which ethylene is a thermoplastic is also an
elastomer” (Rep. Br. 3, 1st para.), although Appellants’ counsel at Oral
Hearing acknowledged that polyethylene is thermoplastic. However,
Appellants have not refuted the Examiner’s citation of Heritage Dictionary
for the definition of “elastomer” and Appellants have not rebutted
Examiner’s finding of that “ethylene foam is a material having elastic
properties resembling rubber” (Ans. 11, 3rd full sentence). Moreover,
inasmuch as elastomeric ethylene foam was a commercially available
material at the time of filing the present application, we find that the
ethylene foam material disclosed by JP’058, which is disclosed as a
cushioning layer as an alternative to rubber, would have suggested an
elastomeric material to one of ordinary skill in the art.
Appellants rely upon the Eriksson declaration as evidence of
nonobviousness. The declaration presents a comparison between flooring
materials with and without a dampening foil. The declaration states that
laminates of the present invention, comprising a dampening foil, “provide
for improved acoustics properties, [ and also] the decreased impact peak
force and tibia acceleration contributes to a more comfortable foot strike for
the consumer which makes the invention unexpected over prior art laminate
floors” (Dec. 14). However, Appellants have not responded to the
Examiner’s finding that the declaration evidence is not commensurate in
scope with the appealed claims since “elastomer used in the declaration has
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Application 11/129,497

a density and thickness not only above that claimed but above that disclosed
in Appellants’ specification (Page 2), and the elastomer used in the
declaration has an elasticity not only below that claimed but below that
disclosed in Appellants’ specification” (Ans. 13, 3rd para.). In addition, we
are in complete agreement with the Examiner that Appellants have hardly
established that the declaration results would have been considered truly
unexpected by one of ordinary skill in the art. In re Merck & Co., Inc., 800
F.2d 1091, 1099(Fed. Cir. 1986); In re Klosak 455 F.2d 1077, 1080 (CCPA
1972). We agree with the Examiner’s reasoning that “[o]ne of ordinary skill
in the art would readily expect that the inclusion of an elastomer material
described as a cushion by JP’058 would soften the laminate and thereby
reduce acoustic levels and impact force on the laminate” (Ans. 13, last para).
Also, as noted by the Examiner, JP’058 specifically teaches that “the impact
from walking is reduced by the inserted cushion, and a feel of walking on is
further improved” (page 5 of Translation, ll. 6-8). Just as unexpected results
are evidence of nonobviousness, expected results, as demonstrated here, are
evidence of obviousness.
Appellants’ separate arguments for certain dependant claims have
been adequately answered by the Examiner.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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Appeal 2010-000263
Application 11/129,497

AFFIRMED

tc
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